PTAB Retains Jurisdiction Of Expired Patents
By Ellen Geyer and Matt Johnson - The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that the...
PTAB Rescinds Discretionary Denial Memorandum
By Ashvi Patel and Matt Johnson - On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed Office...
Two Separate Analyses: Nonobviousness vs Enablement
By Sabrina Bellantoni and Matt Johnson - Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...
Speculative IPR Discovery Request Not in the Interest of Justice
By Lisa Furby and Jim Twieg - “Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int'l, Inc. v. Cuozzo Speed...
PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute
By Lisa Furby and Anneli Kawaoka - In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441 (“’441...